Ex parte Brown
Appeal 2009012485; Appl. No. 10/940,994; Tech. Center 3700
Decided: August 25, 2011
The application on appeal related to a fireplace. A representative claim on appeal read:
1. A removable fireplace cleanout, comprising:
a debris collection tray having a floor pan defining a periphery and a plurality of sidewalls extending upward from the periphery, including a front wall, a rear wall, and first and second lateral sidewalls, the rear wall having an opening defined therein;
a debris dump door panel having an upper edge and a lower edge;
a weight mounted adjacent the lower edge of said debris dump door panel; and
at least one top-mounted hinge pivotally attaching the upper edge of the dump door to the rear wall of the tray,
whereby the dump door closes the opening in the rear wall when the tray is level and swings open by gravity when the tray is tilted so that the rear wall is downward.
The Examiner rejected the claims as obvious over a combination of two references. The first reference, Taylor (see figure below) allegedly taught the claimed tray (20) having walls including a rear wall (26).
|Taylor's fireplace tray|
The secondary reference, Wagg (see figure below) disclosed an ash retaining apparatus. Wagg was relied on for teaching the claimed door panel (46), hinges (48) and weight (60).
|Wagg's ash retainer|
The Applicant appealed and made several arguments against the combination. In one of these arguments, the Applicant addressed the Examiner's findings about Wagg's door handle acting as the claimed "weight." According to the Application, the arbitrary weight of the door handle would not "close the opening in the real wall when the tray is level" as claimed. Further, the person of skill in the art would have no reason to weight the door appropriately to achieve the claimed function since the only function of Wagg's door handle is to manipulate the door, and increasing the weight of the handle would make this task more difficult. Finally, the Applicant argued that the combination did not teach the specific claimed placement of the hinged door in the rear panel.
In the Answer, the Examiner took the position that the claimed placement of the hinged door was a "matter of design choice" and that "it would be obvious to place the hinged cover in any convenient location, including the rear of the fireplace tray."
The Applicant did not file a Reply Brief.
The Board disagreed with the Examiner's "any convenient location" rationale, explaining that Wagg taught a person of ordinary skill in the art to place the door in a specific location: "over an open end of an ash receiving chamber, in order to seal the ash retaining chamber from the external environment."
The Board also criticized the Examiner for not clearly explaining how Taylor's tray and Wagg's door would be combined. The Board addressed two possible variations of how the Examiner might have modified Taylor with Wagg, and found both of them deficient in either teaching the claimed elements or having a rational reason to combine.
The Board considered the first alternative, in which Wagg's door was placed over the top opening of Taylor's tray, in order to have the hinge top-mounted to seal the ash chamber. But the Board noted that such a modification did not satisfy the claim language of "a rear wall having an opening." Finally, the Board found that the Examiner had improperly treated the "whereby the dump door closes when ... and swings open when ..." as intended use so that Wagg's door need only be capable of performing these functions.
The Board then considered the second alternative, in which Taylor’s tray was modified by Wagg to have an opening in the rear wall, and to have a hinged door cover the opening. But in that case, the Examiner's articulated reasoning of “guid[ing] ashes into the ash retaining enclosure" made no sense, since Wagg did not teach that the door performed this function, and in fact taught a different component for guiding ashes.
My two cents: Is it really this easy to beat a design choice rationale? The Board implied that the design choice rationale was defeated by Wagg's teaching of a specific location for the claimed door panel. Yet almost all design choice rejections are based on modifying a specifically taught location/size/shape/ parameter to produce the claimed feature. So this reasoning surprises me.
I think the Applicant had strong arguments about the claimed weight element, and did a good job of explaining why this feature didn't make sense in the combination proposed by the Examiner.
The Board seemed to reverse using slightly different reasoning that used by the Applicant. That is, the Board didn't mention the weight element, and instead dealt solely with the position of door panel with respect to the rear wall. Here, too, the Board did a good job of explaining why it wouldn't make sense to have Taylor's opening in the rear wall covered by a door panel.
Seems like the Board bent over backwards to understand the Examiner's position on how Taylor's tray was combined with Wagg's door. Could have simply said "Examiner didn't explain how the combined features result in the claimed apparatus" and reverse on those grounds.
Postscript: Unfortunately for the Applicant, it took more than six months after the BPAI's reversal for the Examiner to issue a Notice of Allowance.